The U.S. Patent and Trademark Office (USPTO) recently announced that it will begin strictly enforcing a new rule in September: when filing an indirect inter partes review (IPR) proceeding, applicants must "clearly identify where each claim element corresponds in the prior art patent or publication relied upon." While this rule has existed since the IPR system was introduced in 2012, it has previously been largely unenforced. This significant policy shift, effective September 1, 2025, will benefit patent holders and innovators alike.
Basic Introduction to Indirect Review Procedure (IPR)
- IPR is a legal proceeding before the USPTO's Patent Trial and Appeal Board (PTAB) that allows third parties to challenge the validity of issued claims. Challenges are limited to claims based on novelty or obviousness based on prior art patents or publications. Since its establishment in 2012, IPR has become a common tool for patent challenges, offering a simpler and less expensive alternative to court litigation. Another advantage is the lower burden of proof in IPRs, as, unlike in federal court, there is no presumption of validity in IPRs.
Previous lenient practices
- In the past, the USPTO allowed IPR applicants to use "common general knowledge" to assist in meeting the requirements, including applicant-admitted prior art (AAPA), expert testimony, common knowledge, and other evidence beyond the scope of patents or publications.
Changes in the new regulations
- Starting September 1, 2025, IPR petitioners will no longer be able to rely on common knowledge to fill evidentiary gaps, but must rely solely on the prior art patent or publication itself to demonstrate that every element of the challenged claim is disclosed. However, common knowledge can still be used to support motivation to combine or to demonstrate the knowledge level of a person of ordinary skill in the art.
This policy change is expected to increase the burden of proof for IPR petitioners and may provide a procedural advantage for patent holders. Applicants will now be required to ensure that the cited prior art fully discloses all elements of the challenged claims. At the same time, patent holders should carefully scrutinize IPR petitions for any undue reliance on common knowledge, as such reliance could provide compelling grounds for challenging the IPR threshold.
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